Updated: Sep 8
Wei Wei Jeang
Q: My mark is perfect because it’s a good description of my product/service.
A: One of the biggest headaches for trademark attorneys is the generic or descriptive nature of their clients’ marks. Descriptive marks are marks that describe the goods or services. If the USPTO thinks a mark is descriptive it will require it to be registered on a secondary register, called a Supplemental Register. A trademark that is deemed generic can never function as a trademark.
Q: I searched the Internet using Google, so my trademark is available, right?
A: Not quite. An Internet search is not enough to uncover federal trademark registrations. A trademark search should also be done in the federal trademark database.
Q: I checked with the Secretary of State and they said the name is available, it’s ok for me to use it, right?
A: Corporations like LLCs, partnerships, etc. are simply forms of organizing a business and have nothing to do with the rights associated with a trademark. Just because a business name was successfully filed does not mean that the name is available federally.
Q: My name is spelled differently from the other company, it uses an X instead KS, so it should be fine?
A: It may or may not be okay. If the two marks are similar in the way they look or sound, then they may be confusingly similar and likely to cause confusion in the same consumers. This likelihood of confusion is compounded if the goods or services offered are also similar.
Q: I own the domain name already, so I’m protected, right?
A: Having ownership of a domain name does not grant any trademark rights. Further, if the domain name is confusingly similar to a company’s trademark, they may stop you or sue you for infringement. However, the domain name may be eligible for trademark protection if it functions as a source identifier and not merely as an Internet address.
Q: I’ve used my mark for years so it’s protected, right?
A: The use of a trademark over a long period of time may establish common law rights to the trademark. However, common law rights are limited to the geographic area in which you do business and use the mark in connection with your goods/services. So if another company comes along and uses the same trademark in another geographic area, you wouldn’t be able to stop them. You also will not be able to expand into additional geographical areas if someone is able to register the trademark. It’s best to consult a trademark attorney to assess your situation.
Q: I have been putting TM on my mark for years, I’m protected, right?
A: The use of TM for goods or SM for services serves as public notice that you claim ownership of an unregistered mark. Again, this is reliance on common law trademark rights based on the actual use of the trademark in commerce subject to limitations discussed above. The ® symbol is reserved for trademarks that are federally registered.
Q: My innovative product is the first of its kind so I want everyone to identify this new type of product with my trademark, and vice versa.
A: This goal actually articulated to me by a client appears to point to a desire to genericize the trademark - exactly what a trademark owner would not want to do. When the consumer identifies a particular name with a type of product and vice versa, then the name fails to function as an identifier of a particular source. When this happens, the mark is generic and it ceases to identify the source of the product, which is the function of a trademark.
Q: I have plans to use this mark with many different kinds of products, so let’s just list everything in the application.
A: Since it appears that use of the mark with the goods has not yet taken place, the basis for the trademark application is intent-to-use. There must be a bona fide intention to use the mark in commerce on or in connection with all the goods and/or services listed in the application. During prosecution and maintenance of the trademark application/registration, care should be taken to amend the list of goods/services to correspond to actual usage of the mark to avoid jeopardizing the trademark registration.
Q: How do I correctly use my trademark?
A: Trademark is peculiar in that improper usage can lead to a loss of rights. A valid trademark can become generic if the consuming public misuses the mark for it to become the generic name for the product. Some examples of former trademarks that became generic are ASPIRIN, CELLOPHANE, ZIPPER, THERMOS, KEROSENE, and ESCALATOR. Trademarks should be set apart from the surrounding text in some way. They are used improperly when they are used as nouns or verbs, or are pluralized. Examples of improper usage include:
· I love Kindle.
· Would you xerox some copies of my presentation?
· Band-Aids are great for boo-boos.
This is not legal advice for your specific situation. Please consult an experienced trademark attorney.